HC-2013-000089 - [2025] EWHC 2376 (Ch)

In 2009 MSD merged with Schering-Plough. Merck thereafter became concerned at the expansion of the use by MSD of the word Merck outside the USA and Canada, including in various websites with global reach, such as merck.com, merckformothers.com and merckmanuals.com.

Eventually on 8 March 2013 Merck filed its claim in these proceedings, alleging breach of clause 7 of the 1970 Agreement and infringement of its UK and international registered trade marks for the word MERCK.

In 2014 there was a hearing before Nugee J of a preliminary issue as to whether the governing law of the 1970 Agreement was German law or New Jersey law. In his judgment of 21 November 2014 [2014] EWHC 3867 (Ch) (the preliminary issue judgment), Nugee J found that the governing law was German law.

The trial of the action then took place before Norris J in April 2015, and judgment was handed down on 15 January 2016: [2016] EWHC 49 (Pat) (the trial judgment). Norris J found that MSD had breached the 1970 Agreement and had infringed Merck’s registered trade marks, in ways that were more than de minimis. While he found that those registrations should be revoked in respect of some of the goods and services in the specifications, on the grounds of non-use, that did not affect his findings of infringement. The final order following the trial was settled on 3 March 2016 following a hearing in February 2016.

Both Merck and MSD appealed. MSD appealed against the judge’s findings on both breach of contract and trade mark infringement, as well as part of his conclusion on revocation of the Merck trade marks for one of the specifications, and the terms of the final order. Merck, for its part, appealed on more limited grounds, concerning some aspects of the relief ordered by the judge, and the judge’s finding that the use by MSD of merck.com as a domain name and @merck.com email addresses was not a trade mark infringement.

The appeal was heard in June 2017, and judgment was given by Kitchen LJ, with whom Patten and Floyd LJJ agreed [2017] EWCA Civ 1384 (the Court of Appeal judgment). The court upheld the findings of breach of contract and rejected the argument that these were no more than de minimis. However, it upheld Merck’s appeal against the finding of trade mark infringement, on the grounds that the judge had addressed the issue of infringing uses ofthe word Merck in terms that were too general and insufficiently reasoned, and that some of his findings were internally inconsistent. The court also upheld MSD’s appeal on the scope of the revocation of Merck’s trade marks, and found that the formulation of the final relief did not allow MSD the opportunity to be heard and was not explained by further reasons.

In light of the conclusions of the Court of Appeal, four matters were remitted to the High Court for rehearing: (i) the issue of partial revocation of the registered trade marks; (ii) whether the impugned activities of MSD constituted use in the UK in the course of trade in relation to any relevant goods or services; (iii) if so, whether those uses were more than de minimis; and (iv) the appropriate form of relief to be granted for both the breach of contract claim and the trade mark infringement claim.

The hearing of the remitted matters took place before Norris J in July 2018, and judgment was given by Sir Alastair Norris on 20 May 2020, following the judge’s retirement and a period of illness: [2020] EWHC 1273 (Ch) (the remitted matters judgment). The trade mark infringement claim was, this time round, considered by reference to 32 samples of the use of the word Merck by MSD. The judge concluded that 23 of those samples had infringed Merck’s trade marks in a way that was more than de minimis. On the revocation point, he revoked certain of the specifications for Merck’s marks, replacing them with narrower specifications. His final order (dated 28 July 2020) granted an injunction restraining further breaches of the 1970 Agreement and infringements of Merck’s trade marks, and ordered an inquiry as to the damages (if any) suffered by Merck as a result of MSD’s breaches of contract and trade mark infringements. Alongside the order, Sir Alastair Norris gave a further judgment providing his reasoning for some of the specific terms of the order: [2020] EWHC 2120 (Ch).

MSD breached the order of Sir Alastair Norris, leading to a judgment of Edwin Johnson J on 12 April 2024 finding a series of breaches to have occurred by the use of the word Merck by MSD in various documents, webpages, domain names and email addresses: [2024] EWHC 820 (Ch). Other breaches alleged by Merck were, however, found not to have been established. MSD’s appeal to the Court of Appeal was dismissed: [2025] EWCA Civ 343.